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TITLE XIII JURISDICTION AND PROCEDURAL REGULATIONS Chapter I General Provisions 123. Bodies of the ordinary jurisdiction shall be competent to hear cases arising from the exercise of actions of any class or nature resulting from the application of the provisions of the present Law. 124. (1) Unless otherwise agreed, the holder of an exclusive license may, in his own name, exercise any action recognized in the present Law that may be exercised by the owner of a patent in respect of third parties who infringe his rights; however, the holder of a non-exclusive license may not exercise such actions. (2) A licensee who, according to the provisions of the preceding paragraph, is not entitled to bring an action for infringement of a patent may notarially request the owner of the patent to commence the relevant legal action. Where the owner refuses to do so or does not bring the appropriate action within a period of three months, the licensee may do so in his own name, annexing the request made. Prior to expiration of the aforementioned period, the licensee, submitting the request referred to above, may request a judge to adopt preventive measures when they are justified in order to avoid serious damage. (3) A licensee who brings an action in accordance with the provisions of the preceding paragraphs shall inform the owner of the patent accordingly so that he may appear and take part in the hearing. 125. (1) All civil cases under the provisions of the present Law shall be dealt with by means of the ordinary procedure for minor [de menor cuantia] claims. (2) The judge of first instance in the seat of the Higher Court of Justice of the Autonomous Community corresponding to the domicile of the plaintiff shall be competent and, where there are several, one may be permanently designated by the competent legal body. (3) The decisions of judges of first instance shall be subject to appeal before the relevant provincial court [Audiencia Provincial] and the latter's decisions may be subject to appeal for annulment. In both cases, the relevant provisions of the Law on Civil Procedure shall apply [Ley de Enjuiciamiento Civil]. (4) The Law on Civil Procedure shall apply to all aspects not provided for under the present Title. 126. The person against whom an action is brought for infringement of rights derived from a patent may, in all forms of procedure, invoke, by means of a countercharge or by means of defense, the total or partial invalidation of the plaintiffs patent, in accordance with the provisions of common procedural law. For those purposes, the provisions of Article 113 shall be taken into account. 127. (1) Any interested party may bring an action against the owner of the patent so that the competent judge may declare that a particular act does not constitute infringement of the patent. (2) Before bringing his action, the interested party shall, through notarial channels, ask the owner of the patent to make known his views on the opposition between the patent and the industrial working carried out in Spain by the plaintiff or the serious and effective preparations being made for that purpose. At the expiration of a period of one month from the date of such request, if the owner of the patent has not replied or if the plaintiff does not agree with his reply, he may bring the action specified in the preceding paragraph. (3) The action specified in paragraph (1), above, may not be brought by any person against whom a claim for infringement of the said patent has been made. (4) Where the defendant proves that the act referred to in the claim does not constitute infringement of the patent, the judge shall make the necessary declaration. (5) The claim shall be communicated to all persons owning rights in the patent and duly entered in the Register so that they may appear and take part in the hearing. Holders of contractual licenses may not, however, appear in proceedings when their license contracts so specify. (6) The action referred to in the present Article may be brought jointly with an action to declare the invalidation of the patent. 128. (1) Where a patent is contested, the judge shall transmit the proceedings to the Registry of Industrial Property for a report within 30 days. After the report has been received or the said period has expired, the judge shall lift the suspension and shall deal with the proceedings. (2) Where an action distinct from that specified in paragraph (1), above, is brought, the judge may request a report from the Registry of Industrial Property in the form provided for in the preceding paragraph. He may also request the Registry to designate any of its experts in order to advise him. Both the Registry of Industrial Property and its experts shall have the quality of experts for proceedings in the patent field. Chapter II Inquiries to Substantiate Facts 129. (1) The person authorized to bring actions derived from the patent may request the judge urgently to agree to inquiries to substantiate facts that might constitute an infringement of the exclusive right granted by the patent. (2) Before deciding upon the request made, the judge may require the reports and order the investigations he deems necessary. (3) Inquiries may only be agreed upon when, given the circumstances of the case, it may be presumed that there has been infringement of the patent and that it is not possible to prove the facts without carrying out the inquiries requested. (4) When agreeing to any inquiry requested, the judge shall fix the security to be deposited by the plaintiff to meet any damages or prejudice that might be caused. (5) Where the judge does not consider the request to be well founded, he shall reject it by means of an order that is subject to appeal in both its effects. 130. (1) During the inquiry to substantiate the facts, the judge, with the assistance of the expert or experts designated for the purpose, and after having heard the arguments of the person requesting the inquiry, shall determine whether the machines, apparatus or equipment inspected could be used to carry out the alleged infringement of the patent. (2) Where the judge deems that the means inspected cannot be presumed to have been used to carry out the infringement of the patent, he shall terminate the inquiry and shall order a separate record to be made showing the action taken, which shall be kept secret, and shall notify the applicant that he will not be informed of the result of the inquiries carried out. (3) In other cases, the judge, with the assistance of the expert or experts designated for the purpose, shall make a detailed description of the machines, apparatus, processes or equipment by means of which the alleged infringement was presumably carried out. (4) The judge shall ensure that the inquiry to substantiate the facts shall not be used to violate trade secrets or to carry out acts of unfair competition. (5) No appeal may be lodged against the judge's decision on the result of the inquiry. 131. (1) No other certificates or copies of the inquiries to substantiate the facts may be sent other than the copy sent to the party concerned and the information to enable the applicant to bring the corresponding legal action. The applicant may only use such documentation to bring the said action and he may not disclose or communicate it to third parties. (2) Where no request for legal action has been made within two months from the date of carrying out the inquiries to substantiate the facts, the latter shall have no effect and they may not be used for any other legal action. 132. The party concerned by the inquiries to substantiate the facts may claim from the person who requested them the costs and damages they have caused, including loss of profits, without prejudice to general liability for any damages and prejudice that the applicant may have caused. Chapter III Preventive Measures 133. (1) Any person bringing or about to bring any action of the type provided for in the present Law may request the judicial body hearing the case to adopt preventive measures to ensure the effectiveness of the said action, provided that it is proved that the patent that is the object of the action is being worked within the meaning of Article 83 of this Law or that serious and effective preparations have being undertaken to that end. (2) Preventive measures may be requested before the action is brought, together with the action, or after it, and they shall be dealt with separately. 134. The preventive measures to be adopted shall be those that duly ensure total effectiveness of the judgment to be pronounced, in particular, the following: (1) cessation of acts that infringe the plaintiff's rights; (2) withholding and storing of the objects produced or imported in infringement of rights and the means exclusively used for such production or for carrying out the patented process; (3) security for any compensation for damage and prejudice; (4) relevant provisional notations. 135. (1) A request for preventive measures shall be made in writing. In that written request, the plaintiff shall specify the measures he seeks in relation to the acts concerned and shall provide the evidence he deems necessary, accompanied by the relevant documents. (2) Within a period of five days, after having examined the declarations and documents submitted by the parties, the judge may decide to carry out the inquiries and investigations he deems necessary to reach a conclusion on the justification for the preventive measures sought. (3) The realization and carrying out of the inquiries and investigations decided upon, where appropriate, shall be effected within a non-extendable period of 20 days. (4) The judge's decisions on whether to accept or refuse to carry out investigations shall not be subject to appeal. (5) Within six days following the decision referred to in paragraph (2), above, or at the end of the period for carrying out the investigations and inquiries decided upon, where appropriate, the parties shall appear before the judge. 136. (1) Within six days following the appearance referred to in the preceding Article, the judge shall issue a decision on the request for preventive measures and on the relevant costs. (2) The decision on the request for preventive measures shall in no way prejudge any decision arising from action related to the corresponding substantive procedure. (3) Preventive measures shall not be adopted when it is shown that the defendant is protected by rights based on prior utilization according to the terms of Article 54. 137. (1) Where the judge agrees to the preventive measures requested, he shall fix the security to be provided by the plaintiff to cover any damage or prejudice that might arise. (2) Where the measures requested involve restrictions on the defendant's industrial or commercial activity, the judge shall, when deciding with respect thereto, fix the amount of the security by which the said defendant may at any time substitute the effectiveness of the said restrictive measures agreed upon. (3) The securities, whether principal or substitutionary, declared for the defendant shall consist of a fixed sum for a fixed period of time when they are related to acts of industrial or commercial working that may continue indefinitely. (4) The security may consist of a bank draft. Securities in kind shall not be permitted. (5) In fixing the amount of the securities, the judge shall hear both parties. 138. (1) Where a decision at first instance in the substantive civil procedure pronounces judgment against one of the parties and is the subject of appeal, an account of the appeal shall be given to the appellee so that, within a period of three days, he may request the judge to adopt the relevant preventive measures or to call for the appropriate substitutionary security ensuring the effectiveness of the judgment reached, provided that those measures have not been adopted previously or were not insufficient. (2) The judge of first instance shall have competence to hear and decide upon anything relevant to such security, independently of the admissibility of the appeal and the transmission of the principal decisions to the court hearing appeals. 139. (1) Where the request for preventive measures is made before the principal action is brought, such measures shall be wholly without effect if the principal action is not brought within a period of two months following the decision authorizing preventive measures. (2) In the case provided for in the preceding paragraph, when ordering the lifting of the preventive measures, the judge shall fix the amount of the damage and prejudice to be paid to the defendant from the security provided by the plaintiff. Where the amount of the security is not sufficient to cover the compensation for damage and prejudice, the defendant may bring a corresponding action for liability to recover the sum remaining. (3) Any preventive measures authorized shall be without effect if the judgment of first instance was not favorable to the petition to ensure effectiveness for which the measures were sought, or the judgment of first instance shall be annulled if the judgment was favorable to the said petition. Chapter IV Conciliation in the Field of Employees' Inventions 140. Before bringing any judicial action based on application of the principles of Title IV of the present Law dealing with employees' inventions, the dispute shall be brought before the Registry of Industrial Property for conciliation. 141. (1) For the purpose of conciliation mentioned in the preceding Article, a Commission shall be set up chaired by an expert from the Registry of Industrial Property designated by the Director thereof, and consisting of an expert designated by the workers in the enterprise to which the inventor belongs and another expert designated by the employer. (2) Where the inventor is an employee of a public administration, the Conciliation Commission shall be chaired by an expert from the Registry of Industrial Property designated by the Director thereof and shall include those members specified by Royal Decree in accordance with the legislation on civil servants. 142. (1) A draft agreement shall be proposed by the Conciliation Commission within a period not exceeding two months following the request for conciliation and, within a period not exceeding 15 days, the parties shall state whether or not they accept the proposal. Silence on their part shall be deemed to constitute acceptance. (2) Judges shall not accept petitions concerning rights under Title IV of the present Law unless they are accompanied by a certificate from the Director of the Registry of Industrial Property stating that one of the parties did not accept the agreement proposed under the terms of the preceding Articles. (3) Articles 460 and 480 of the Law on Civil Procedure shall also apply where appropriate.

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